UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 223 13-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`90/010,422
`
`FILING DATE
`
`02/26/2009
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`6,009,469
`
`2655-0185
`
`6565
`
`1210312010
`7590
`42624
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 WILSON BL VD., 7TH FLOOR
`ARLINGTON, VA 22203
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 12/03/2010
`
`Please. find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. I 0/03)
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 1
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PAR TY REQUESTER'S CORRESPONDENCE ADDRESS
`EWIN H. TAYLOR
`BLAKEL Y,SOKOLOFF,TAYLOR & ZAFMAN, LLP
`1279 OAKMEAD PARKWAY
`SUNNYVALE, CA 94085-4040
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date:
`
`MAILED
`D£C U3 2010
`CCNTHAI. REEXAMiNATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO.: 90010422
`PATENT NO.: 6009469
`ART UNIT : 3992
`
`Enelosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 2
`
`

`
`Notice of Intent to Issue
`Ex Parte Reexamination Certificate
`
`Control No.
`
`90/010,422
`
`Examiner
`
`Patent Under Reexamination
`
`6,009,469
`Art Unit
`
`3992
`
`ALEXANDER J.
`KOSOWSKI
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`1. r8] Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is
`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
`issued in view of
`(a) r8] Patent owner's communication(s) filed: 10 November 2010.
`(b) D Patent owner's late response filed: __ .
`(c) D Patent owner's failure to file an appropriate response to the Office action mailed: __ .
`(d) D Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31 ).
`(e) D Other: ___ .
`Status of Ex Parte Reexamination:
`(f) Change in the Specification: D Yes r8] No
`D Yes r8] No
`(g) Change in the Drawing(s):
`(h) Status of the Claim(s):
`(1) Patent claim(s) confirmed: 2.3.5.6, 15 and 18.
`(2) Patent claim(s) amended (including dependent on amended claim(s)): 1.9. 14. 16 and 17
`. (3) Patent claim(s) canceled: §..
`(4) Newly presented claim(s) patentable: __ .
`(5) Newly presented canceled claims: __ . _
`
`'
`
`(6) Patent claim(s) D previously D currently disclaimed: __
`
`(7) Patent claim(s) not subject to reexamination: 4.7 and 10-13.
`
`2. r8] Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
`necessary by patent owner regarding reasons for patentability and/or confirmation must be submitted promptly
`to avoid processing delays .. Such submission(s) should be labeled: "'Comments On Statement of Reasons for
`Patentability and/or Confirmation."
`3. 0 Note attached NOTICE OF REFERENCES CITED (PT0-89~).
`4. r8J Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/SB/08 substitute).
`5. D The drawing correction request filed on __ is: D approved
`D disapproved.
`
`6. D Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
`a)D All b)O Some*
`c)O None
`of the certified copies,have
`0 been received.
`0 not been received.
`0 been filed in Application No. __ .
`D been filed in reexamination Control No. __ .
`D been received by the International Bureau in PCT Application No. __ .
`
`* Certified copies not received: __ .
`
`7. D Note attached Examiner's Amendment.
`8. 0 Note attached Interview Summary (PT0-474).
`9. 0 Other: __ .
`
`cc: Requestt:r (if third oartv requester)
`U.S. Patent and Trademark Office
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 3
`
`

`
`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 2
`
`DETAILED ACTION
`
`1)
`
`This Office action addresses claims 1-3, 5-6, 9, 14-18 of United States Patent Number
`
`6,009,469 (Mattaway et al), for which it has been determined in the Order Granting Ex Parte
`
`Reexamination (hereafter the "Order") mailed 3/13/09 that a substantial new question of
`
`patentability was raised in the Request for Ex Parte reexamination filed on 2/26/09 (hereafter the
`
`"Request"). Claims 4, 7, 10-13 are not subject to reexamination. This is a response to the
`
`second after final amendment filed 11/10110. Claims 1-3, 5-6, 9 and 14-18 are allowable and/or
`
`confirmed below. Claim 8 has been canceled.
`
`Examiner notes that the after final amendment filed 11110/10 has re-written claim 9 in
`
`independent form, thereby incorporating the limitation from claim 9 into canceled claim 8. The
`
`limitation of claim 9 was confirmed in related reexamination 90/010416 in view of the same
`
`proposed prior art. In addition, previously confirmed claim 16 has been rewritten into
`
`independent form. Therefore, claims 9 and 16 are now allowable as amended.
`
`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
`
`2)
`
`Claims 1-3, 5-6, 9 and 14-18 are allowable and/or confirmed.
`
`The following is an examiner's statement of reasons for patentability and/or confirmation
`
`of the claims found patentable in this reexamination proceeding:
`
`Referring to claim 1, the claim is allowable over the prior art that was explained in the
`
`request and determined to raise a substantial new question of patentability in the order granting
`
`reexamination and over the prior art that was applied and discussed by the examiner in the
`
`present reexamination proceeding because that prior art does not explicitly teach a computer
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 4
`
`

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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 3
`
`program product for use with a computer system comprising program code for determining the
`
`currently assigned network protocol address of the first process upon connection to the computer
`
`network, in combination with the remaining elements or features of the claimed invention.
`
`Referring to claim 5, the claim is allowable over the prior art that was explained in the
`
`request and determined to raise a substantial new question of patentability in the order granting
`
`reexamination and over the prior art that was applied and discussed by the examiner in the
`
`present reexamination proceeding because that prior art does not explicitly teach a method for
`
`establishing point-to-point communications with other processes comprising determining the
`
`currently assigned network protocol address of the first process upon connection to the computer
`
`network, in combination with the remaining elements or features of the claimed invention.
`
`Referring to claim 9, the claim is allowable over the prior art that was explained in the
`
`request and determined to raise a substantial new question of patentability in the order granting
`
`reexamination and over the prior art that was applied and discussed by the examiner in the
`
`present reexamination proceeding because that prior art does not explicitly teach a method for
`
`establishing a point-to-point communication including querying the server process as to the on-
`
`line status of the first callee process and receiving a network protocol address of the first callee
`
`process over the computer network from the server process, in combination with the remaining
`
`elements or features of the claimed invention.
`
`Referring to claim 16, the claim is allowable over the prior art that was explained in the
`
`request and determined to raise a substantial new question of patentability in the order granting
`
`reexamination and over the prior art that was applied and discussed by the examiner in the
`
`present reexamination proceeding because that prior art does not explicitly teach a method for
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 5
`
`

`
`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 4
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`establishing a point-to-point communication including wherein a generated element represents a
`
`communication line on mute status, in combination with the remaining elements or features of
`
`the claimed invention.
`
`Claims 2-3, 6, 14-15, 17-18 depend on allowable claims, and are therefore also allowable.
`
`Any comments considered necessary by PATENT OWNER regarding the above
`
`statement must be submitted promptly to avoid processing delays. Such submission by the
`
`patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or
`
`Confirmation" and will be placed in the reexamination file.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed
`
`Conclusion
`
`as follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 6
`
`

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`..
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`Application/Control Number: 90/010,422
`Art Unit: 3992
`
`Page 5
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`By EFS-Web:
`
`Registered users of EFS- Web may alternatively submit such correspondence via the
`electronic filing system EFS-Web, at
`
`https://sportal.uspto.gov/authenticate/authenticateuserlocalepf.html
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that
`needs to act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e.,
`electronically uploaded) directly into the official file for the reexamination proceeding, which
`offers parties the opportunity to review the content of their submissions after the "soft scanning"
`process is complete.
`
`Any inquiry concerning this communication or earlier communications from the
`
`Reexamination Legal Advisor or Examiner, or as to the status of this proceeding, should be
`
`directed to the Central Reexamination Unit at telephone number (571) 272-7705.
`
`I Alexander J Kosowski/
`
`Primary Examiner, Art Unit 3992
`
`Straight Path Ex. 2004
`Sony Corp. v. Straight Path IP Group, Inc.
`Case No. IPR2014-00231
`
`PAGE 7